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TriReme Medical, LLC v. Angioscore, Inc.

United States District Court, N.D. California, San Francisco Division

March 9, 2017

TRIREME MEDICAL, LLC, Plaintiff,
v.
ANGIOSCORE, INC., Defendant.

          SUMMARY-JUDGMENT ORDER RE:ECF NO. 117

          LAUREL BEELER United States Magistrate Judge

         INTRODUCTION

         This is a suit under 35 U.S.C. § 256 to correct the named inventors on three patents.[1] Plaintiff TriReme seeks to add a non-party, Dr. Chaim Lotan, as an inventor to those patents. The patents all relate to an angioplasty balloon catheter, called the AngioSculpt, that is manufactured by defendant AngioScore, Inc.

         Before the court is AngioScore's motion for summary judgment. Broadly speaking, AngioScore raises two issues. First, AngioScore argues that TriReme has no rights in the patents in suit; it contends that, under a 2003 consulting agreement, Dr. Lotan assigned his rights in the patents to AngioScore. When Dr. Lotan licensed his rights to TriReme in 2014, he thus had nothing to license. On AngioScore's view, TriReme thus lacks standing to bring this § 256 suit. Second, AngioScore argues that the correction claims fail as a matter of law. It argues that TriReme has not raised a genuine issue that Dr. Lotan was an inventor of the AngioSculpt, and so was not wrongly omitted from the patents in suit.

         The court held a hearing on AngioScore's motion on February 9, 2017.[2] For the reasons given below, the court partly grants AngioScore's motion. The court denies AngioScore's argument concerning an assignment under the consulting agreement. AngioScore has not shown that TriReme lacks standing to bring this suit. On the question of inventorship, the court grants AngioScore's summary-judgment motion. The patents are correct as they stand. TriReme has not raised a genuine case for trial that Dr. Lotan made an inventive contribution to the relevant element of the AngioSculpt.

         STATEMENT

         1. Overview - The AngioSculpt Scoring Catheter and the Compliant-Tube Attachment Structure

         This case involves three U.S. patents - Nos. 8, 080, 026, 8, 454, 636, and 8, 721, 667 - issued on an angioplasty balloon catheter used to open blockages in the peripheral vascular system.[3] The catheter in question is called the AngioSculpt and is sold by defendant AngioScore. As the Federal Circuit explained in an earlier appeal of this case:

To accomplish this [opening of arterial blockages], an AngioSculpt device is inserted into a blood vessel and inflated when it reaches the targeted occlusion area. The balloon contains a metal spiral on its surface, which expands as the balloon inflates and scores the plaque lining the occluded blood vessel. The balloon is then deflated and the device removed from the vessel. All three AngioScore patents relate to this concept. Each lists three inventors: Dr. Eitan Konstantino, Tanhum Feld, and Nimrod Tzori. None lists Dr. Chaim Lotan as an inventor.[4]

         The AngioSculpt's signature feature is its metal scoring spiral. The element that is most salient for this inquiry, however, is the "compliant-tube attachment structure" (CTAS) that binds the proximal end of the scoring spiral to the body of the catheter.[5] The CTAS was developed in early design work on the AngioSculpt to compensate for the movement of the metal spiral as the catheter's balloon inflated and deflated. Early prototypes revealed at least two problems with the balloon and its attached scoring element. When the scoring spiral was fixed rigidly to both ends of the catheter, the balloon would become distorted.[6] When the proximal end of the spiral was left unattached to the catheter body, which is to say, when the proximal end of the spiral was "free-floating, " the spiral often snagged on other structures or dislodged from the balloon - a situation that could leave the metal element inside patients' bodies and so was unacceptable.[7] In early design work, occurring mainly in the first half of 2003, AngioScore settled on using a semi-compliant polymer tube (the CTAS) to bind the proximal end of the scoring spiral to the catheter body. This CTAS element is claimed in the patents in suit.[8]

         The CTAS element is the focus of this dispute. Named inventor Dr. Tzori testified that he came up with the CTAS idea.[9] He has described how he worked over several design iterations to arrive at using a full polymer tube to bind the spiral.[10]

         Dr. Lotan disagrees. He claims that the CTAS was his idea. He has testified that he came up with the idea for fixing the proximal end of the scoring spiral in a way that would "allow for motion, " "allow for shortening . . . when you inflate [the] balloon . . . but [would] then . . . take the wires back to [their] original position" upon deflation.[11] He said that he and his associate, Dr. David Meerkin, "came up with a solution that we need a semicompliant tube that will, on the one hand, be fixed, on the one hand [sic], be compliant."[12]

         Named inventors Dr. Konstantino and Mr. Feld now claim that Dr. Lotan made an inventive contribution to the AngioSculpt (the CTAS, specifically) and was wrongly omitted from the patents in suit.[13] (Both Dr. Konstantino and Mr. Feld were among the founders of AngioScore.[14]Dr. Konstantino later left Angio Score to found TriReme. Mr. Feld is not now employed by either AngioScore or TriReme.[15]) It is undisputed that, in the relevant patent applications, the named inventors averred under penalty of perjury that they were the only inventors of the AngioSculpt. In declarations submitted in this lawsuit, however, Dr. Konstantino and Mr. Feld claim that the CTAS was Dr. Lotan's idea and that he therefore should have been named as an inventor on the relevant patents.[16]

         "In June 2014, Dr. Lotan granted TriReme an exclusive license to 'any and all legal and equitable rights he held in the AngioScore patents.'"[17] The contention that Dr. Lotan is a wrongly omitted co-inventor of the patents in suit undergirds TriReme's present claim for correction of the patents under 35 U.S.C. § 256.

         2. The Patents and Relevant Claims

         The specific claims in dispute all relate to the CTAS. The parties stipulated earlier in this case to agreed constructions for the relevant specific claims made in the three patents in suit.[18]

         3. The Events

         This lawsuit centers on events that occurred mostly in the first half of 2003 as AngioScore developed the device that would eventually become the AngioSculpt scoring balloon catheter. Throughout this factual discussion the court gives specific dates mostly to give chronological structure to the narrative. Specific dates are not critical to the analysis, with one exception, and the reader need not remember or attach much significance to them. The one date that is significant is the May 1, 2003 effective date of Dr. Lotan's consulting agreement with AngioScore. For events before May 1, 2003, the parties do not materially disagree on what happened; they do disagree on what the earlier events show about what Dr. Lotan contributed to the AngioSculpt. The nature of Dr. Lotan's work for AngioScore after May 1, 2003 will determine whether he assigned to AngioScore whatever rights he might have had in the patented catheter, and so had nothing to license to TriReme in 2014.[19]

         3.1 Invention

         Up to January 2003, Dr. Konstantino had designed versions of the device on which the scoring spiral either had a free-floating proximal end or had both its proximal and distal ends fixed to the catheter. The only actual prototypes built to this date, however, had scoring spirals whose proximal ends were free-floating.[20] In late January 2003, Dr. Lotan met with Dr. Konstantino and Mr. Feld for AngioScore's "Design Review #1." According to Dr. Konstantino, Dr. Lotan expressed concern with the free-floating proximal end of the scoring spiral. He was concerned that the floating end could become entangled with other structures and advised against it being free- floating.[21] After this design review, Mr. Feld built a model of the scoring spiral that would be fixed to the catheter at both ends, but this version failed during bench testing and was deemed "unsuitable."[22] AngioScore thus "went back to prototypes with scoring spirals that were free floating at their proximal ends."[23]

         In early April 2003, Dr. Konstantino faxed to AngioScore's patent-prosecution attorney "seven pages of hand[-]drawn figures of the device."[24] One of these drawings depicts a "polymer tube / mesh" at the "proximal side" of the scoring element.[25] Dr. Konstantino testified that he prepared this drawing on or around March 20, 2013.[26] The "polymer tube" does not seem at this stage to have been intended to compensate for the scoring spiral's movement during inflation. Instead, Dr. Konstantino called the "polymer tube" a "protective" sheath.[27] Its purpose, according to TriReme's expert, was to protect the scoring spiral's proximal end from getting caught on something.[28]

         Also in early April 2003, Dr. Tzori performed a study on cadaveric human legs using prototype devices with free-floating proximal ends. Summarizing this study's results, Dr. Tzori reported that "[t]he floating proximal ends of the devices were caught in the sheath's valve while being taken out."[29] The report does not suggest how to solve this "retraction problem."[30]

         This brings us to the first highly significant event for our inquiry. On April 14, 2003, Dr. Lotan and his associate, Dr. David Meerkin, gathered with Dr. Konstantino and Mr. Feld to test prototype scoring catheters on a live pig. They used five prototypes whose scoring spirals had free-floating proximal ends.[31] Two documents reported the results of this study. The first is an email that Dr. Konstantino sent late in the night after the study. In that email Dr. Konstantino wrote: "We had a good experiment today with Chaim and David. We spent all day there until late evening discussing engineering aspects of the device." Then, in a note that TriReme deems important, Dr. Konstantino added: "We received a huge amount of design inputs that we didn't have until now." Reporting more specific results, Dr. Konstantino also wrote: "Four (4) out of five devices dislodged from the balloon due to poor bonding." And that, "[t]he proximal end [of the scoring spiral] was caught in the guide upon retrieval a few times." His notes for "immediate actions" included the observation that, "[t]he proximal end (floating) is already in design[-]modification process . . . ." And, finally, that the "[p]roximal end should be protected by a polymer sleeve before 4/27."[32]

         The second document that emerged from the April 14th pig study is a report that Dr. Meerkin authored, entitled "Angioscore Spiral Balloon Study I."[33] This more fully related the results of the pig study. The most relevant notes in this report are these (all language is quoted):

• Sticking was noted. Balloon was retracted and spiral dislodged from the balloon.
Summary Balloon 1. . . . Retraction - serious problem.
• [R]etracted guide and loss of spiral occurred. Balloon retrieved without spiral.
Summary. Balloon handles well but there is a clear retention problem. . . . Very little can be said about challenging []anatomy until the retention issue is solved. . . . [T]he current bonding method is clearly inadequate and balloon retention of the spiral is a central issue.
Recommendations[.] Bonding of the proximal and distal edges [is] essential.[34]

         Dr. Lotan has testified that the last recommendation ("Bonding . . . [is] essential") reflected his idea that the spiral's proximal end should be fixed by a semi-compliant tube.[35] At the same time, though, Dr. Lotan has also testified that this report does not mention using a CTAS to solve this problem.[36]

         A week later Dr. Lotan met again with Dr. Konstantino and Mr. Feld. According to Dr. Konstantino and Mr. Feld, the three men discussed "Dr. Lotan's suggestion for the polymer sleeve and [Mr. Feld's] suggestion for a stress[-]relief mechanism built into the metal of the scoring spiral."[37]

         Three days after this meeting, Dr. Tzori emailed AngioScore's patent-prosecution counsel. Dr. Tzori described and included a drawing of a scoring-balloon catheter with a "proximal polymeric spring."[38] He also mentioned two approaches that AngioScore was trying in order to address the problems created by the movement of the scoring spiral when the balloon inflated. He first mentioned the approach favored by Mr. Feld, in which "sinuses" on the metal spiral itself "compensate] for elongation of the struts [during] inflation."[39] He then pointed to the "polymeric spring" sketch as depicting

a different way to accomplish the same thing .... A polymeric tube is attached to the . . . proximal end of the device and ... to the catheter proximally .... During inflation the tube is stretched elastically and compensate[s] for the movement of the proximal end of the device. During deflation the tube contracts and pulls the device's end back to its place.[40]

         The email does not say who came up with the idea of using a "polymeric spring."

         3.2 Assignments - The 2003 Consulting Agreement - The 2014 License

         AngioScore and Dr. Lotan entered into a consulting agreement in November 2003, though the contract had a retroactive effective date of May 1, 2003.[41] The agreement's terms are undisputed. Under the contract, in exchange for AngioScore stock options, Dr. Lotan agreed to "advise [AngioScore] on product design, clinical trial design and interpretation of clinical data, " as well as "assist [AngioScore] with preclinical and clinical testing of the Company's products."[42] The contract does not name a particular product.[43] In § 9(b) of the contract Dr. Lotan agreed to the following assignment of rights:

Assignment of Inventions. Consultant [Dr. Lotan] agrees to promptly disclose to the Company and hereby assigns to the Company ... all right, title and interest in and to all inventions, . . ., developments, concepts, know-how, improvements or trade secrets, whether or not patentable, that Consultant may solely or jointly conceive or develop or reduce to practice during the term of this Agreement that relate to the Services (collectively referred to as "Inventions").[44]

         There is no dispute that, after April 2003, Dr. Lotan did not work on the physical design of the catheter. There is also no dispute that, after the May 1, 2003 effective date of the consulting agreement, Dr. Lotan did work on other catheter-related issues under the terms of his consulting contract. His work after May 1, 2003 can be divided into two groups. First, "in May or June 2003, " he gathered information on catheter-balloon manufacturers. At the time, Dr. Lotan was planning to attend a medical conference in Paris. AngioScore asked him to gather information on available catheter balloons while he was there. Dr. Lotan says that he "collected contact information for some balloon companies" and sent this to AngioScore. He does not know what AngioScore did with the information.[45]

         Second, Dr. Lotan designed, implemented, and interpreted human clinical tests of the AngioSculpt. The precise dates of Dr. Lotan's work on these studies is uncertain. He has testified that he designed human trials for AngioScore "after April 2003, " but denies that he conducted any such trial himself in that timeframe.[46] He has testified that he used and tested the AngioSculpt in human clinical trials after May 2004.[47] He also confirmed that the devices that he used in these clinical tests included the CTAS.[48]

         GOVERNING LAW

         1. Summary-Judgment Law

         The court must grant a motion for summary judgment if the movant shows that there is no genuine dispute as to any material fact and the moving party is entitled to judgment as a matter of law. Fed.R.Civ.P. 56(a); Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 247-48 (1986). Material facts are those that may affect the outcome of the case. Anderson, 477 U.S. at 248. A dispute about a material fact is genuine if there is sufficient evidence for a reasonable jury to return a verdict for the non-moving party. Id. at 248-49. In ruling on a motion for summary judgment, inferences drawn from the underlying facts are viewed in the light most favorable to the non-moving party. E.g., MatsushitaElec. Indus. Co. v. Zenith Radio Corp., 475 U.S. 574, 587 (1986); Ting v. United States, 927 E2d 1504, 1509 (9th Cir. 1991). Furthermore, the court "must view the evidence presented through the prism of the substantive evidentiary burden." Anderson, Ml U.S. at 254. "The question" under Rule 56, in other words, "is whether a jury could reasonably find either that the plaintiff proved his case by the quality and quantity of evidence required by the governing law or that he did not." Id. (emphasis in original).

         2. Patents: Omitted Inventors

         "Patent issuance creates a presumption that the named inventors are the true and only inventors." Ethicon, Inc. v. United States Surgical Corp., 135 F.3d 1456, 1460 (Fed. Cir. 1998) (citing Hess. v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980 (Fed. Cir. 1997)); see 35 U.S.C. § 282(a) ("A patent shall be presumed valid."). "Inventorship is a question of law" based upon underlying questions of fact. See Ethicon, 135 F.3d at 1460 (citing Hess, 106 F.3d at 90 and Sewallv. Walters, 21 F.3d 411, 415 (Fed. Cir. 1994)).

         "A patented invention may be the work of two or more joint inventors." Ethicon, 135 F.3d at 1460 (citing 35 U.S.C. § 116). "Because '[c]onception is the touchstone of inventorship, ' each joint inventor must generally contribute to the conception of the invention." Id. (quoting Burroughs Wellcome Co. v. BarrLab., Inc., 40 F.3d 1223, 1227-28 (Fed. Cir. 1994)). "Conception is the 'formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.'" Id. (quoting Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1376 (Fed. Cir. 1986) (quoting in turn 1 Robinson on Patents 532 (1890)). "[F]or the conception of a joint invention, each of the joint inventors need not 'make the same type or amount of contribution' to the invention." Id. (quoting 35 U.S.C. § 116). "Rather, each needs to perform only a part of the task which produces the invention." Id. "Furthermore, a co-inventor need not make a contribution to every claim of a patent." Id. (citing 35 U.S.C. § 116). "A contribution to one claim is enough." Id. (citing SmithKline Diagnostics, Inc. v. Helena Lab. Corp., 859 F.2d 878, 888 (Fed. Cir. 1988)). Consequently, "inventorship is determined on a claim-by-claim basis." Gemstar-TVGuide Int'l, Inc. v. Int'l Trade Comm 'n, 383 F.3d 1352, 1381 (Fed. Cir. 2004). "Thus, the critical question for joint conception is who conceived, as that term is used in the patent law, the subject matter of the claims at issue." Ethicon, 135 F.3d at 1460.

         Allegedly omitted co-inventors "must prove their contribution to the conception of the [patented] claims by clear and convincing evidence." Id. at 1461. A putative inventor's own testimony "cannot, standing alone, rise to the level of clear and convincing proof." Id. (quoting Price v. Symsek, 988 F.2d 1187, 1194 (Fed. Cir. 1993)). Nor can that of other interested witnesses. E.g., Lacks Indus., Inc. v. McKechnie Vehicle Components USA, Inc., 322 F.3d 1335, 1350 (Fed. Cir. 2003). Instead, "an alleged co-inventor must supply evidence to corroborate his testimony." Ethicon, 135 F.3d at 1461.

         "Corroborating evidence may take many forms." Ethicon, 135 F.3d at 1461. Contemporaneous documentary proof of the alleged contribution gives the strongest corroboration. E.g., Juicy Whip, Inc. v. Orange Bang, Inc., 292 F.3d 728, 743 (Fed. Cir. 2002) (quoting Sandt Tech, . Ltd. v. Resco Metal & Plastics Corp., 264 F.3d 1344, 1350-51 (Fed. Cir. 2001)). Indeed, to corroborate the testimony of interested actors, courts "have consistently required" documentary proof seems to be necessary. Lacks, 322 F.3d at 1350 ("[C]ase law reveals a clear requirement that such oral testimony by interested parties must be corroborated by documentary testimony. . . . [C]ourts have consistently required documentary corroboration of oral testimony by interested parties . . . .") (citing, inter alia, The Barbed Wire Patent Case, 143 U.S. 275 (1882)). "Circumstantial evidence about the inventive process may also corroborate." Ethicon, 135 F.3d at 1461. "Additionally, oral testimony of someone other than the alleged inventor may corroborate." Id.

         "Whether the inventor's testimony has been sufficiently corroborated is evaluated under a 'rule of reason' analysis." Id. "Under this analysis, '[a]n evaluation of all pertinent evidence must be made so that a sound determination of the credibility of the [alleged] inventor's story may be reached.'" Id. (quotingPrice, 988 F.2d at 1195) (emphasis in original).[49]

         "Importantly, this [rule-of-reason] analysis 'does not require that every detail of the testimony be independently and conclusively supported" by the corroborating evidence.'" TransWeb, LLC v. 3MInnovative Props. Co., 812 F.3d 1295, 1301-02 (Fed. Cir. 2016) (quoting Ohio Willow Wood Co. v. Alps South, 735 F.3d 1333, 1348 (Fed. Cir. 2013)).

         No single piece of proof need be conclusive. It is not necessary that any one piece of evidence definitively lay out the inventor's contribution, or show her whole contribution to the inventive process. See TransWeb, 812 F.3d at 1302 (quoting Fleming v. Escort Inc., 114 F.3d 1371, 1377 (Fed. Cir. 2014)). The court, again, reads "all pertinent evidence" together, "as a whole, " to decide whether the claimant has raised a triable issue - with the ultimate demand being for "clear and convincing" proof. See TransWeb, 812 F.3d at 1302 (quoting Fleming, 114 F.3d at 1377) ("as a whole").

         In the end, "there are no hard and fast rules as to what constitutes sufficient corroboration, and each case must be decided on its own facts." TransWeb, 812 F.3d at 1302 (citing Sandt, 264 F.3d at 1350).

         ANALYSIS

         1. Assignment - Standing and Jurisdiction

         The court must first decide whether TriReme has standing to bring this correction suit. AngioScore suggests that it does not, and that the court consequently lacks subject-matter jurisdiction over this case. More specifically, AngioScore argues that, under § 9(b) of the 2003 consulting agreement, the work that Dr. Lotan did for AngioScore after the agreement's May 1, 2003 effective date effected an assignment to AngioScore of all Dr. Lotan's rights in the AngioSculpt. In AngioScore's view, Dr. Lotan thus had no rights to assign to TriReme in June 2014 - so that TriReme lacks standing to sue for a § 256 correction. See (Mot. - ECF No. 120-3 at 27-30); see generally, e.g., Larson v. Correct Craft, Inc., 568 F.3d 1319, 1325-27 (Fed. Cir. 2009) (one who assigns away rights in invention lacks constitutional standing to bring § 256 suit). The Federal Circuit put the assignment issue in this case thus:

Whether Dr. Lotan assigned his rights under § 9(b) . . . depends on whether Dr. Lotan's continued work on AngioSculpt after the effective date in fact amounted to "developing, " or "reducing to practice" an "invention, " "development, " or "improvement" pursuant to § 9(b). Only if Dr. Lotan's continued work after May 1, 2003, constituted "developing, " or "reducing to practice" would his inventive contribution have been assigned to AngioScore under § 9(b) of the Consulting Agreement.

TriReme, 812 F.3d at 1055 (record citations omitted).

         Dr. Lotan's work for AngioScore after May 1, 2003 comes under two heads. First, "in May or June 2003, " he gathered information on catheter-balloon manufacturers. At the time, Dr. Lotan was planning to attend a medical conference in Paris. AngioScore asked him to gather information on available catheter balloons while he was there. Dr. Lotan says that he "collected contact information for some balloon companies" and sent this to AngioScore. He does not know what AngioScore did with the information.[50]

         Second, Dr. Lotan designed, implemented, and interpreted human clinical tests of the AngioSculpt. The precise dates of Dr. Lotan's work on these studies is uncertain. He has testified that he designed human trials for AngioScore "after April 2003, " but denies that he conducted any such trial himself around this date.[51] He has testified that he used and tested the AngioSculpt in human clinical trials after May 2004.[52] He also testified that the devices that he used in these clinical tests included the semi-compliant polymer tube that is the focus of this correction suit.[53]

         The court cannot say on this record that TriReme lacks standing as a matter of law. More exactly the court cannot say as a matter of law that Dr. Lotan's work for Angio Score after May 1, 2003 constituted developing the AngioSculpt or reducing it to practice. The likeliest date by which the device was reduced to practice appears to be July 2003, when AngioScore filed its first relevant patent application. By this date, though, the only (post-May 1, 2003) work that Dr. Lotan indisputably had done was to send AngioScore "contact information for balloon" manufacturers from a conference that he was attending for his own purposes. Sometime "after April 2003, " Dr. Lotan designed but did not conduct clinical tests of the AngioSculpt. After May 2004, he used the AngioSculpt in clinical tests; but, as TriReme rightly points out, if the device was being used on humans in clinical tests, then necessarily it had already been reduced to practice.

         AngioScore has not met its Rule 56 burden of showing that, as a matter of law, Dr. Lotan's work after May 1, 2003 amounted to developing the AngioSculpt or reducing it to practice. The court thus cannot summarily conclude that Dr. Lotan's work effected an assignment of his rights to AngioScore under § 9(b) of the consulting agreement. The court thus denies AngioScore's jurisdictional motion.

         2. Dr. Lotan's Contribution is Inadequately Corroborated

         2.1 Declarations

         The factual dispute over Dr. Lotan's alleged inventive contribution starts as a battle of conflicting testimony. Named inventor Dr. Tzori testified that he came up with the CTAS idea.[54] He has described how he worked over several design iterations to arrive at using a full polymer tube to flexibly bind the proximal end of the spiral.[55]

         By contrast, Dr. Lotan claims that he conceived of the CTAS. He has testified that he came up with the idea for fixing the proximal end of the scoring spiral in a way that would "allow for motion, " "allow for shortening . . . when you inflate [the] balloon . . . but [would] then . . . take the wires back to [their] original position" upon deflation.[56] He said that he and Dr. Meerkin "came up with a solution that we need a semicompliant tube that will, on the one hand, be fixed, on the one hand [sic], be compliant."[57]

         Named inventors Dr. Konstantino and Mr. Feld now claim that Dr. Lotan contributed the CTAS to the AngioSculpt and was wrongly omitted from the patents in suit.[58] It is undisputed that, in the relevant patent applications, all the named inventors averred under penalty of perjury that they were the only inventors of the AngioSculpt. In declarations submitted in this lawsuit, however, Dr. Konstantino and Mr. Feld claim that the CTAS was Dr. Lotan's idea and that he therefore should have been named as an inventor on the relevant patents.[59]

         It is rudimentary in this area of the law that the testimony of interested parties and witnesses cannot alone yield clear and convincing proof that an allegedly omitted co-inventor contributed to a patent. Interested testimony must be independently corroborated. E.g., Lacks Industries, 322 E3d at 1350 ("A review of the relevant case law reveals a clear requirement that such oral testimony by interested parties must be corroborated by documentary testimony"). An immediate corollary to this rule prohibits the cross-corroboration of interested testimony: The testimony of some interested witnesses cannot alone corroborate that of other interested witnesses. Id. ("Addressing first the cross-corroboration of oral testimony, we conclude that the Special Master rightly refused to accept it as adequate."); Weaver v. Houchin, 467 F.App'x 878, 880 (Fed. Cir. 2012) ("[W]ithout corroboration, the oral testimony" of other putative co-inventors "is simply insufficient as a matter of law to meet the clear and convincing standard of proof required to establish co-inventorship.") (emphasis added).[60]

         The decisive issue will thus come down to the effect of the proof that is said to corroborate, not only TriReme's basic claim that Dr. Lotan contributed to the conception of the CTAS, but, more exactly, the testimony of the interested actors who have averred that he did so contribute. On this crucial head, TriReme suggests that the operative facts "center[] on the design discussion Dr. Konstantino and Mr. Feld indisputably held with Dr. Lotan late into the evening of April 14, [2003, ] after the porcine study"[61] According to TriReme, "documentation originating from that day, and shortly thereafter, shows when a solution was finally reached and that it was Dr. Lotan's idea."[62] TriReme points to six particular pieces of evidence to corroborate its claim that Dr. Lotan contributed to the invention of the AngioSculpt - and, particularly, to the CTAS. To corroborate, more exactly, the testimony of the interested witnesses. Before considering these items, the court addresses several preliminary issues.

         2.2 Preliminary Considerations

          2.2.1 Time

         It is first relevant to note the time span that separates the plaintiff's new declarations from the events that they describe. This is an express part of the rule-of-reason analysis. E.g., Woodland Trust, 148 F.3d at 1371 (rule-of-reason corroboration test includes "time period between the event and trial"). The relevant events occurred in the first half of 2003; this lawsuit was filed in 2014; Dr. Konstantino first filed a declaration asserting Dr. Lotan's inventive contribution of the CTAS in 2015; Dr. Lotan testified to his contribution in 2015[63]; and Mr. Feld's declaration came in January 2017.[64] The years that have passed since the genesis of the AngioSculpt and CTAS alone sap the probative impact of the witnesses' testimony. See Woodland Trust, 148 E3d at 1371 ("[T]here is a very heavy burden to be met by one challenging validity when the only evidence is the oral testimony of interested persons and their friends, particularly as to long-past events."); Juicy Whip, 292 E3d at 743 ("[T]he evidence . . . was insufficient as a matter of law to surmount the clear and convincing . . . hurdle. The testimony . . . came more than eight and twelve years, respectively, after the witnesses saw" the relevant products.)

         2.2.2 "Element-wise" analysis

         In an overarching point, TriReme complains that AngioScore has mounted an impermissible, "element-wise attack" on the corroborating evidence. (Opp. -ECF No. 127-3 at 16, 18-19.) By which TriReme seems to mean that the rule-of-reason analysis cannot discretely assess individual items of corroborating proof, especially to notice their shortcomings, as this would run afoul of the Federal Circuit's directive that such proof be "taken as a whole." (Id.) In this ...


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